Monday, 7 May 2012

Annotation for
Technical Board of Appeal of the EPO, T
1553/06 (Public availability of
documents on the World Wide Web/PHILIPS) of 12.3.2012

Last March the Board of appeal decided in a rather unusual
opposition procedure (T 1553/06). It
appears that the opposition was a test case in which the proprietor and
opponent cooperated to create a specific set of facts to allow a board of
appeal to rule when Internet publications are publicly available. This annotation will only discuss the admissibility
of the opposition.

Cooperation between opponent and proprietor is the only
subject on which the Enlarged Board of Appeal ever reversed itself. Whereas G
1/84 allowed a patent proprietor to oppose his own patent, but G 9/93
explicitly reversed this. Later the
enlarged board further sharpened this rule, in G 3/97, by forbidding anyone from opposing a patent if that
opponent is acting on behalf of the patent proprietor.

So when the board of appeal suspected that the opponent had
worked together with the proprietor to create a rather specific set of
circumstances, they naturally were on their guard. There were plenty of indications in the file
which could give the board of appeal such a suspicion. For example, the
opponent could make use of four documents (I1 to I4) which contain nearly the identical
wording of original claims 1, 2, 3 and 4 of the application as filed. It
appeared that the applicant had access to information about I3 and I4, before
the application was filed. Conveniently, the retrieval from the Internet of
documents I1 and I2 was recorded by a notary public, shortly before the filing
date of the application. One of the
recorded documents even stated that ‘This page will be used for a test case
relating to Internet publications.’

In the summons to oral proceedings the Board noted that if
the proprietor and the opponent had indeed worked together to create a test case
then the proceedings may not be contentious. A non-contentious opposition would
be inadmissible. Apart from the G
decisions cited above, which hold that opposing on behalf of the patent
proprietor is an abuse of process, the summons also cited G 9/91 and G 10/91
which state that opposition proceedings are in principle to be considered as contentious, whereintheparties
normally represent opposing interests.

Given the suspicions of the board and its interpretation of
the case law, one would fear that this test case would be short lived. However,
the parties succeed in convincing the Board that these proceedings were
contentious and thus admissible. Two arguments seem to have swayed the board
(section 1.3 of the decision): The parties agreed that the opponent was not
bound by any instructions from the patentee and the parties defended mainly
opposing positions. (See also the headnote)

The Enlarged Board (G 3/97, 5.1.1) did not consider it a
problem that employment of a straw man would normally not be detected by the
EPO. The rule against self-opposition through a straw man would still force the
parties to conduct the proceedings on an inter partes basis, since “[o]therwise,
they must accept the possibility that the straw man's involvement may come to
light.” A relevant indication that the
opponent is a straw man acting for the patent proprietor can emerge, in
particular, from the relationship between
the two. The question arises if such a relationship is present in the
present case. The parties admitted that there was a substantial level of
co-operation between them and other professional representatives in order to
create a test case. (Section 6.2) Although the opponent may not have been explicitly
bound by the proprietor's instructions at least they were bound to keep the
fiction of the test case alive.

Strangely, even the Board itself seems to keep this fiction
alive. In section 5.2, the Board notes
that the nature of a test case may impact the standard of proof. In section
6.3.2, considering that I1 and I2 must have existed on the Internet given that
this is a test case and the existence of I1 and I2 is a precondition for
enabling the board to deal with the gist of the test case. In section 6.4, from the test nature of the
present case it must be concluded that the notary was under a duty to keep the content
divulged to it confidential, since “Otherwise the test case would be largely
moot.”

They say that bad cases make bad law. If so, one could hope
that specially constructed cases make good law. But one may wonder if it has
worked out that way. The present decision has introduced a general test to
decide when Internet disclosures are public. That general test which is now to
be applied in all cases is based on a very specific and artificial set of
circumstances which are very unlikely to occur in real life. Every time an
Internet disclosure is discussed one of the parties will doubtless raise that
the disclosure was not publicly available based on the new test.

For example, the new test raises the question if access to a
document stored on the World Wide Web is not merely theoretical. One indication
for non-theoretical access is that the document could be found with the help of
a public web search engine by using one or more keywords all related to the
essence of the content of that document. In truly adversarial proceedings this
would normally not be a point; the very fact that the opponent found the
document is a strong indication that the document could be found without the
help of the proprietor.

It seems that the Board could have gone in another direction
with this case. From the admission that the parties prepared evidence together,
one could conclude that there is a relationship between the parties in the
sense of G 3/97. From that relationship the Board could have concluded that
these are not contentious proceedings as required. Even if one were to conclude
from the opposing positions defended by the parties that these proceedings are
contentious then in application of the principle of free evaluation of evidence
the jointly prepared evidence should be given no weight. The outcome of this case would be that either
the opposition is inadmissible or that the patent would be maintained as
granted for lack of evidence.

As for Internet disclosures, we would be left with the old,
admittedly somewhat vague, rule that access to an Internet document must have
been ‘direct and unambiguous’ for the document to be publicly available (G
1/92). Real world cases would no doubt have given further meaning to these terms
in due time.